USPTO Patents Application 10735093

REMARKS

Summary of the Office Action

Claims 81-180 are currently pending in this
application. Claims 156-180 were rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written
description requirement. Claims 156-180 were rejected under
35 U.S.C. § 101 as being directed to non-statutory subject
matter. Claims 81-84, 86, 88-109, 111, 113-134, 136, 138-159,
161 and 163-180 were rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schein et al . U.S. Patent
No. 6,002,3 94 ("Schein") in view of Venkatraman et al . U.S.
Patent No. 6,139,177 ("Venkatraman"). Claims 85, 110, 135 and
160 were rejected 35 U.S.C. § 103(a) as being unpatentable
over Schein in view of Venkatraman and further in view of
Levine U.S. Patent No. 5,988,078 ("Levine"). Claims 87, 112,
137 and 162 were rejected 35 U.S.C. § 103(a) as being
unpatentable over Schein in view of Venkatraman and further in
view of Shane U.S. Patent No. 5,793,972 ("Shane").

Reply to the § 112, first paragraph Rejection

The Examiner rejected claims 156-180 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written
description requirement. In particular, the Examiner contends
that applicants' specification lacks any teaching of a
machine -readable medium capable of comprising machine program
logic recorded thereon. Applicants respectfully traverse the
Examiner ' s re j ection .

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Applicants have amended claims 156-180 to recite a
computer readable medium comprising a computer program
recorded thereon. Support for claims 156-180 may be found,
for example, in paragraph [0072] of applicants' specification,
which indicates that "the particular hardware system used
[provides] television program guide services and features to
user over the Internet in the form of multiple web pages."
Applicants respectfully submit that it is inherent, from this
and other passages describing the implementation of a program
guide on a multimedia system, that computer readable medium
comprising a computer program recorded thereon is provided.
Accordingly applicants respectfully request that the
Examiner's rejection under 35 U.S.C. § 112, first paragraph,
be wi t hdrawn .

Reply to the § 101 Rejection

The Examiner rejected claims 156-180 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. In
response, applicants have amended claims 156-180 to more
particularly define the claimed invention. As amended,
claims claims 156-180 recite a computer readable medium
comprising a computer program recorded thereon. Applicants
respectfully submit that, as amended, claims claims 156-180
are directed to statutory subject matter.

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Accordingly, applicants respectfully submit that
claims 156-180 comply with 35 U.S.C. § 101, and request that
the Examiner's rejection be withdrawn.

Reply to the §§ 103 Rejections

Claims 81-84, 86, 88-109, 111, 113-134, 136, 138-
159, 161 and 163-180 were rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schein in view of Venkatraman.
Claims 85, 110, 135 and 160 were rejected 35 U.S.C. § 103(a)
as being unpatentable over Schein in view of Venkatraman and
further in view of Levine. Claims 87, 112, 137 and 162 were
rejected 35 U.S.C. § 103(a) as being unpatentable over Schein
in view of Venkatraman and further in view of Shane.
Applicants respectfully traverse the Examiner's rejection.

Applicants have amended claims 81, 106, 131 and 156
to more particularly define the claimed invention.
Applicants' claim amendments introduce no new matter and are
fully supported by the originally filed specification (e.g.,
at 111 0081-0083) .

Applicants' claimed invention is directed to a
method, systems and computer- readable medium for providing an
Internet television program guide. The system may receive an
e-mail address from the user via a registration page to
customize the information provided to the user, and receive

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television listings provided by a computer system. The system
may generate and display a web page of selectable program
listings, and provide a program information page in response
to a user selection of a selectable program listing.

In the Office Action, the Examiner correctly
concedes that "Schein fails to specifically teach receiving an
e-mail address provided by the user via a registration web
page generated by the web server, " and seeks to make up for
this deficiency with Venkatraman.

First, Venkatraman itself strongly suggests that a
person of ordinary skill would not have been lead to
applicants' novel and nonobvious Internet television program
guide to which users register to customize the information
provided to the user. Specifically, FIG. 6 of Venkatraman
describes a registration web page in which events are
identified (e.g., EVENT_1 through EVENT_N) and input fields
for e-mail addresses are associated with each identified
event . The user may then indicate an interest in an
identified event by entering an e-mail address in the
associated input field. This approach has nothing to do with
registering for an Internet television program guide to
customize the information provided to the user. Instead, it
merely is a means for a user to request notices for particular
events that happens to be via a web page. Although

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Venkatraman uses the term "register, " it is clear from
applicant's specification and claims that the term "register"
has a meaning and a technical aspect that far surpasses the
limited meaning and technical aspect that Venkatraman
associates with the term.

In addition, the Office Action fails to articulate a
legally sufficient rationale for rejecting the claims based on
obviousness under 35 U.S.C. § 103(a). The Office Action does
not specify which of the rationales set forth in the
Examination Guidelines for Determining Obviousness Under 35
U.S.C. § 103 in view of the Supreme Court Decision in KSR
International Co. v. Teleflejc Inc. is relied upon to support
the rejection (72 FR 57526) . Instead, the Office Action
simply alleges that it would be obvious to combine Schein and
Venkatraman "in order to receive messages specifying
predetermined events associated with the user device" (Office
Action, pp. 4-5) . But this is nothing more than a statement
as to what may be an advantage if one were to combine the
teachings of the references - the Examiner has simply stated
that the teaching of Venkatraman is useful. This does not
provide the required articulated reasoning as to why a person
of ordinary skill would combine the teachings of these
references or why the claimed invention would be obvious in
view of the references.

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Indeed, applicants respectfully submit that this
rejection is an example of the impermissible use of the
inventor's disclosure as a blueprint for piecing together the
prior art to defeat patentability - the essence of hindsight.
"It is impermissible to use the claimed invention as an
instruction manual or * template' to piece together the
teachings of the prior art so that the claimed invention is
rendered obvious." In re Fitch , 23 U.S.P.Q.2d 1780, 1784
(Fed. Cir. 1992) . Thus, a prima facie case of obviousness has
not been established.

Thus, applicants submit that there is no basis in
Schein or Venkatraman, or otherwise, to combine the teachings
of the references to result in applicants* claimed invention.
As noted above, such a combination would result only from the
application of inappropriate hindsight reconstruction.

In addition, neither Levine nor Shane makes up for
the deficiencies of Schein and Venkatraman. Accordingly,
applicants respectfully submit that claims 81-180 are
patentable over Schein, Venktraman, Levine and Shane, whether
taken alone or in combination, and respectfully request that
the Examiner's rejection be withdrawn.

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Conclusion

In light of the foregoing, applicants respectfully
submit that this application is in condition for allowance.
Prompt reconsideration and allowance are respectfully
requested.

Respectfully submitted.

/ Paul E. Leblond /

Paul E. Leblond
Reg. No. 58,3 97

Agent for Applicants and Assignee

Ropes & Gray LLP

Customer No. 75563

52 5 University Avenue

Palo Alto, California 94301

Tel . : (650) 617-4000

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